Different Work Made for Hire Test Under the Copyright Act of 1909

This case applies the Copyright Act of 1909 version of “work made for hire.”  Why are we still talking about the 1909 Act when the Copyright Act of 1976 became effective on January 1, 1978?  Since the 1909 Act applies to all copyrights secured before 1/1/1978 and the first term for pre-1/1/1978 copyrights is 28 years, followed by a second term of 67 years (28 + 67 = 95), some portions of the 1909 Act remain relevant until 2072.  (1977 + 95 = 2072).  Those portions of the Copyright Act of 1909 will remain relevant throughout the careers of Millennial attorneys, and then some.  I say some portions, because the 1976 Act did away with many of the 1909 Act’s draconian requirements.

Composer and music producer Jack Urbont wrote the Iron Man theme song in 1966.  Urbont wrote theme music for a variety of other Marvel television characters.  In 2000, without Urbont’s permission, Dennis Coles (aka Ghostface Killah), Sony and Razor Sharp Records produced and released Supreme Clientele, an album spotlighting the Iron Man theme song on two tracks.  Urbont became aware of the album around early 2010 and sued Sony, Coles and Razor Sharp Records for copyright infringement in 2011.  Sony and Razor Sharp argued that the Iron Man theme was a work made for hire for Marvel and that Urbont did not own the copyright.  The district court granted summary judgment in favor of Sony and Razor Sharp.  On appeal, the Second Circuit held that Urbont raised issues of material fact regarding his copyright ownership and vacated the district court’s summary judgment ruling.

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Attorney’s Fees Awards Not Controlled by Losing Party’s Reasonableness Arguments

Before ending its 2015-2016 term, the U.S. Supreme Court issued an opinion in Kirtsaeng v. John Wiley & Sons, Inc.  – for a second time.  SCOTUS issued its first Kirtsaeng opinion in March 2013.  That time, the Court ruled that Kirtsaeng did not infringe Wiley’s copyrights by selling books in the U.S. that were published abroad by Wiley.  I posted on the Court’s decision in First Sale Doctrine Not Limited by Geography, Rules U.S. Supreme Court.

Whether the lower courts erred in denying Kirtsaeng’s motion for attorney’s fees brought Kirtsaeng before the Court the second time.  The Court determined that the lower courts may not have understood the full scope of their discretion to award attorney’s fees and remanded the case for further consideration of Kirtsaeng’s attorney’s fees motion.

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Supreme Court of Florida to Weigh in on Common Law Sound Recording Rights

I’ve written periodic posts about Flo & Eddie since December 2014.  As a brief refresher, the corporation Flo & Eddie owns the rights to the pre-February 15, 1972 sound recordings of The Turtles.  Band members Mark Volman and Howard Kaylan own Flo & Eddie.  Sirius XM Radio, Inc. operates nationwide as a satellite and Internet radio provider.  Flo & Eddie sued Sirius in federal courts in California, New York and Florida.  Flo & Eddie claimed that Sirius violated Flo & Eddie’s ownership rights in its pre-1972 sound recordings by broadcasting recordings and making buffer and backup copies of Turtles performances without a license or authorization.  Appeals in the Flo & Eddie v. Sirius cases are pending before the Second, Ninth, and Eleventh Circuits.

Flo & Eddie’s cases against Sirius arise from the lack of federal copyright protection for pre-1972 sound recordings.  Sound recordings did not receive protection under the Copyright Act until February 15, 1972, although musical compositions and lyrics have always been protected.  If pre-1972 sound recording rights are protected at all, it is under state copyright law.  Although the district courts in California and New York ruled in Flo & Eddie’s favor on its state law claims, the Southern District of Florida granted summary judgement in Sirius’ favor.  On appeal in the Florida case, the Eleventh Circuit Court of Appeals determined that the state law questions had not been decided by Florida state courts.  The Eleventh Circuit certified four questions to the Supreme Court of Florida for that court’s guidance on Florida state law.

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ISPs Receive DMCA Safe Harbor Protection for Pre-1972 Sound Recordings

Capitol Records and other sound recording copyright owners sued Vimeo for copyright infringement, alleging Digital Millennium Copyright Act (DMCA) violations.  Vimeo is an Internet service provider that allows members to post videos the members create, which the general public can view.  The copyright owners alleged that some of the member-created videos included copyrighted content without authorization from the copyright owners.  The interlocutory appeal from the district court presented three issues to the Second Circuit Court of Appeals.

(i) whether the DMCA §512(c) safe harbor applies to pre-1972 sound recordings.  This is a different issue than copyright owners’ rights under state copyright law for pre-1972 sound recordings.

(ii) whether evidence of some viewing by Vimeo employees of videos that played all or virtually all of ‘recognizable’ copyrighted songs was sufficient to satisfy the standard of red flag knowledge, which would make Vimeo ineligible for the DMCA safe harbor; and

(iii) whether Plaintiffs have shown that Vimeo had a general policy of willful blindness to infringement of sound recordings, which would justify imputing to Vimeo knowledge of the specific infringements.

The Second Circuit affirmed the district court’s rulings in part and vacated in part.  The Second Circuit ruled that the DMCA safe harbor, a federal statute, protects service providers from infringement liability for pre-1972 sound recordings, which are covered by state law.  Secondly, the Second Circuit ruled that some viewing by a service provider’s employee of a video that plays all or virtually all of a recognizable copyrighted song does not disqualify the service provider from safe harbor protection.  Thirdly, the Second Circuit ruled that the copyright owners did not show a policy of willful blindness by Vimeo that would have disqualified Vimeo from safe harbor protection.

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De Minimis Horn Hits Blow Away Copyright Infringement Claim

Pop star Madonna and Shep Pettibone recorded and released the mega-hit dance song Vogue in the early 1990s.  Pettibone recorded the song Love Break in the early 1980s.  VMG Salsoul LLC claims ownership of both the sound recording and musical composition copyrights for Love Break.  VMG sued Madonna, Pettibone, and others, for copyright infringement, claiming that Pettibone “sampled” (physically copied the actual sounds) of horn hits (horn chords) from Love Break in creating Vogue.

Ruling that the horn hits were not original under copyright law and, alternatively, that any horn hit sampling was de minimis, the district court granted summary judgment in favor of Madonna and Pettibone.  The Ninth Circuit held that the de minimis exception to copyright infringement actions applies to all copyright infringement actions, including sound recordings.  In a previous case, Newton v. Diamond, the Ninth Circuit held that the de minimis exception applied to musical composition infringement claims, but did not decide the sound recording question, since that question was not part of that case.  The Ninth Circuit reversed the district court’s award of attorney’s fees to the defendants for abuse of discretion.

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Known Copyright Registration Inaccuracies Can Hurt Later

I’m going to ignore blog post best practices and start out with a statute:


(1) A certificate of registration satisfies the requirements of this section and section 412, regardless of whether the certificate contains any inaccurate information, unless—

(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and

(B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.

(2) In any case in which inaccurate information described under paragraph (1) is alleged, the court shall request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.

17 U.S.C. §412(b).

Palmer/Kane sued Rosen Book Works for copyright infringement.  The district court granted Rosen’s motion for the district court to request the Copyright Office to advise the court on whether the Copyright Office would have refused registration if it knew that certain information included in the registration application was inaccurate.  Rosen argued that Palmer/Kane’s predecessor knowingly misrepresented to the Copyright Office that the photographs it applied to register as an unpublished collection had not been previously published.

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No Such Thing as Unintentionally Giving Up a Copyright Termination Right

Albert Brumley wrote the gospel song, “I’ll Fly Away,” in the late 1920’s.  The music publishing company he sold his song to registered the copyright in 1932.  Albert later purchased the music publishing company that bought his song, regaining ownership of the song.  Albert’s sons, Robert and William, became the owners of both the copyright to the song and the music publishing company by buying the company from Albert and his wife, Goldie, in 1975.  Albert died in 1977.  In May 1979, Goldie signed an agreement assigning all rights to obtain renewals of works composed by Albert to Brumley & Sons.  Robert bought out William’s interest in the company and became the sole owner in 1986.  Goldie died in 1988.

Robert’s four other siblings (excluding William) served Robert with a copyright grant termination notice in 2008.  The siblings later filed a lawsuit against Robert and Brumley & Sons to obtain a declaration that their termination notice was effective.  Robert argued that Goldie relinquished any terminating rights by making the 1979 assignment to Robert and William.  The district court ruled in the siblings’ favor on the termination right.  On appeal, the case was returned to the district court for a new trial on the work made for hire issue.  The district court again ruled in the siblings’ favor on the termination issue.  The Sixth Circuit Court of Appeals affirmed.  The work made for hire question was not an issue in the second appeal.

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Independent Contractor Content Providers Ruled DMCA Safe Harbor Users

BWP Media owns the rights to a number of celebrity photographs.  BWP sued Clarity Digital Group (n/k/a/ AXS) for copyright infringement when 75 of BWP’s photos appeared without BWP’s permission on Examiner.com, a website owned by AXS.  AXS argued it was protected from liability by the Digital Millennium Copyright Act (DMCA) safe harbor.  The district court agreed and granted AXS’s motion for summary judgement.  The Tenth Circuit affirmed.

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Contract Defenses Argument Can’t Bypass Expired Statutes of Limitation

Drug manufacturer Amylin Pharmaceuticals hired Consumer Health to develop materials to help Amylin more successfully market its diabetes drug, Byetta.  Although Consumer Health began its work in December 2005, the parties signed a contract in March 2006.  The contract assigned to Amylin the copyright in the materials Consumer Health created.  Amylin stopped paying Consumer Health for work after September 30, 2006, but continued to use the materials Consumer Health created. 

Consumer Health sued Amylin for copyright infringement in July 2013.  The district court ruled that Consumer Health filed its lawsuit too late under both the four-year California statute of limitations applying to contract rescission and the three-year copyright statute of limitations and dismissed the suit.  The Seventh Circuit Court of Appeals affirmed the district court’s ruling that Consumer Health’s suit was filed more than four years too late.

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Copyright Preregistration Another Piece of the Registration Puzzle

I recently attended a Continuing Legal Education (CLE) seminar in which the presenter asserted that copyright owners who register their works within one month after the infringement occurs can still get attorney’s fees and statutory damages in litigation.  That assertion perplexed me, so I looked at the statute afterwards.  Perplexed, because, for the copyright owner to receive attorney’s fees and statutory damages, the statute requires that the work be registered either before the infringement occurs or within 3 months after the first publication.

Section 412 of the Copyright Act of 1976 indicates that statutory damages and attorney’s fees may be available for copyright owners of preregistered works when the registration occurs one month after the owner learns of the infringement. 

…an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement…

17 U.S.C. §412.

The one month window applies only if the work is a) preregistered and b) the one month period occurs before 3 months after the first publication.

This leads to two questions:  1) What is preregistration? and 2) What is publication?

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